When creating new media works, such as films, television shows, and other entertainment productions, in addition to the “who is the owner of the work” question – which includes issues of joint authorship – a separate question that often arises is – what is the obligation to identify someone who contributed to the work with a specific title, such as producer, associate producer, executive producer, and so on?
In FOCAL POINT FILMS, LLC, v. ARJOT SANDHU, 2019 WL 7020209 (N.D. California. 12/20/2019) this issue was resolved in favor of a film documentarian in a dispute with a person who made some contributions to a film, and who claimed the right to be listed as a “producer” of the film.
The plaintiff, Focal Point, had the idea for and had been working on a documentary film about Betty Reid Soskin, “a 94-year old African American woman who entered the public spotlight when she became the oldest National Park Ranger serving in the United States.” The owner of Focal Point met the defendant Ms. Sandhu at a film workshop, and she asked to work on the documentary film project. She did work “as an extra camera operator during a handful of shoots, always under Gibel’s supervision and with the understanding that Sandhu would be compensated on partially deferred basis.” Focal Point offered Ms. Sandhu “associate producer” credit on the film, however after exchanging numerous drafts of agreements, over several years, the parties could not agree in writing. Allegedly Ms. Sandhu “snuck unauthorized co-director and co-editor credits for herself into a “pitch deck” for the film” – even after her services were terminated, and her assertion of title or co-ownership over the film was preventing Focal Point from obtaining financing to finish the film. Focal Point sued for a declaratory judgment that it was the sole owner of the Film.
The issue for the court was whether Ms. Sandhu owned any part of the film, and whether she was required to be listed as a Producer.
There is no universally accepted definition of “Producer” – it is an industry term of art that refers to “the person responsible for finding and launching a project; arranging financing financing; hiring writers, a director, and key members of the creative team; and overseeing all elements of pre-production, production and post-production, right up to release.” See https://www.masterclass.com/articles/what-does-a-hollywood-producer-do-responsibilities-of-a-film-producer-and-how-to-become-a-producer#what-is-a-producer. Or, in words of the Producers Guild of America “A Producer initiates, coordinates, supervises and controls, either on his/her own authority, or subject to the authority of an employer, all aspects of the motion-picture and/or television production process, including creative, financial, technological and administrative. A Producer is involved throughout all phases of production from inception to completion, including coordination, supervision and control of all other talents and crafts, subject to the provisions of their collective bargaining agreements and personal service contracts.” https://www.producersguild.org/page/faq
The legal issue
Looking at the issue of Producer credit, the court noted that under Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) a person who claims ownership in a copyrighted work does not have a claim for false designation of origin (or any other unfair deceptive trade practice claim, in most cases) because “the phrase “origin of goods” “refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept or communication embodied in those goods.”” Id. at 37. The court also cited Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1143 (9th Cir. 2008) in which the court rejected plaintiff’s claim that a karaoke company misrepresented it had proper synchronization licenses from the plaintiff – noting that “Construing the Lanham Act to cover misrepresentations about copyright licensing status as Sybersound urges would allow competitors engaged in the distribution of copyrightable materials to litigate the underlying copyright infringement”
The court, relying on the above cases, but also many others including Friedman v. Zimmer, No. 15 Civ. 502, 2015 WL 6164787 (C.D. Cal. July 10, 2015) (which held that a musician who claimed his work was included in a movie that represented only the music of Hans Zimmer was included, did not have a claim for failure to attribute him and his music in the credits) – found that Dastar and Sybersound barred Ms. Sandhu’s claims, including her claims that her reputation was being injured by failure to credit her role in the Film. The court also rejected similar state law claims.
Why a written agreement is important
If not obvious from the above case, it is important for film makers – really, any creators that will collaborate with others, to have an agreement *before* that collaboration commences. In this case the parties made significant efforts to put their agreement in writing, but the fact that they could not agree should have been a red flag to the documentarian that troubled waters were ahead. In these cases it is almost always best to terminate the relationship and find another collaborator who will sign a fair written agreement. At least this case helps to resolve one issue that comes up in those cases where a written agreement is not present – the collaborator will probably not have Lanham Act type claims for “credit” that would survive Dastar and its progeny, even under state law. That leaves just the issue of co-ownership – which in this case was not at issue on the motion.
Last week, the Ninth Circuit upheld the lower court ruling that the artists of the 2013 “Blurred Lines” best-selling single infringed the copyright of Marvin Gaye’s 1977 song “Got To Give It Up”.
In 2013, the family of the late Marvin Gaye sued musicians Pharrell Williams, Robin Thicke, and T.I. (Clifford Harris, Jr.), and related recording companies, for copyright infringement. “Blurred Lines” was the best-selling single in the world that year and the Gaye family believed it to be similar in composition to Marvin Gaye’s 1977 song “Got To Give It Up”. In 2015, the trial jury agreed. After three years of an appeal process brought by the musician defendants, the United States Court of Appeals for the Ninth Circuit upheld the infringement ruling (Williams, et al. v. Gaye, et al. Case No. 15-56880)(March 21, 2018).
The decision was not unanimous. Judge Nguyen wrote a dissenting opinion stating that the songs “differ in melody, harmony, and rhythm.” She also noted that it can be “challenging for judges untrained in music to parse two pieces of sheet music for extrinsic similarity. But however difficult this exercise, we cannot simply defer to the conclusions of experts about the ultimate finding of substantial similarity. […] Judges must still decide whether, as a matter of law, these elements collectively support a finding of substantial similarity.” This ruling ultimately changes the music industry landscape moving forward, as it is arguable that the decision improperly protects an artist’s form of musical style. The majority opinion written by Judge Milan D. Smith, Jr., however, focused mostly on the technicalities of the case and the grounds for appeal, determining that the trial court erred only in finding Interscope Records and T.I. liable.
The Gaye family is entitled to approximately a $5.3 million-dollar judgement and running royalties of 50% on future songwriter and publishing revenues. The damages breakdown consisted of: $3,188,528 in actual damages, plus profits of $1,768,192 against Thicke and $357,631 against Williams (and companies collecting royalties on William’s behalf). TI and his associated recording company were cleared of any infringement.
***To investigate or consider copyright protection for music, lyrics, or other works of art, or for more information, please contact Pamela K. Riewerts, Esq., partner at Oliver & Grimsley, LLC. Pamela may be reached via email at: firstname.lastname@example.org
We are very pleased to welcome Adam G. Holofcener as an associate with the Firm. We have worked with Adam the last few years in his position as the Executive Director of the non-profit organization Maryland Volunteer Lawyers for the Arts (MDVLA), whose mission and work we are proud to support. Adam is currently splitting his time between us and the MDVLA. In Adam’s work with MDVLA, Adam has worked with many artists, entertainers, lawyers and related businesses in the Baltimore metro area on entertainment law issues.
Adam’s practice with us focuses on Trademarks, Entertainment Law, and general business and corporate issues. Prior to joining Oliver & Grimsley, Adam was a staff attorney at the California Monitor, a program of the California Attorney General that assisted homeowners struggling with foreclosure under the National Mortgage Settlement. Adam has a license to practice law in Maryland and in California (currently inactive).
In The Hebrew University of Jerusalem V. General Motors, LLC, CV10-03790 AHM (JCx) (U.S. D. Ca March 16, 2012) the court refused to grant summary judgment on a claim that GM’s otherwise licensed use of an image of Albert Einstein violated the rights holder’s post mortem publicity right.
Raw ideas that cannot be patented (such as ideas for themes or methods of performance of a TV show) can only be protected by a contract, in most cases. Contrast this with, for example, a script, character development, book, adaptation, or short film – all of which can be protected by copyright. So, people who have a raw idea but no real copyrightable work behind it (and in some cases, even when then they do have copyrightable content, see Fischer v. Viacom International, 115 F. Supp 2d 535 (D. Md. 2000)) must resort to a delicate balance of asking the person they disclose the idea to, to pay them if they use the idea (or not use the idea without an agreement on compensation). Many content owners will not make such an agreement.
In this case, the plaintiff alleged that it had “created a written series treatment for the idea, including character biographies, themes, and storylines” and mailed that to an executive at USA Network, and then later had a meeting with that executive to “pitch” the show; the plaintiff alleged “that it was standard in the entertainment industry for ideas to be pitched with the expectation of compensation in the event of use.” USA Network later came out with the show Royal Pains, a show “in which a doctor, after being expelled from the medical community for treating patients who could not pay, became a concierge doctor to the rich and famous in the Hamptons” – the precise thematic treatment alleged by plaintiff that it had disclosed 4 years earlier.
The problem these cases have is that if the claim essentially sounds in copyright, it must only be brought in Federal Court (and the copyright must be registered to do so) – and worse, copyrights do not protect ideas, only the expression of them. So, to avoid this preemption effect of copyright law, the plaintiff must plead an “extra element” – and in all of these cases, that extra element is contract (a contract requires proof of an offer, acceptance, consideration, and legality – none of those elements are required to establish copyright infringement). This court held that “As long as the elements of a contract are properly pleaded, there is no difference for preemption purposes between an express contract and an implied-in-fact contract.” Hence, the claim survived another day.
We advise our clients to be as express as possible when making pitches, even if in the applicable industry, it is “standard practice” to respect the notion of payment if the idea is used.